22nd October 2013
1 October 2013, Hong Kong
Given China’s position as the world’s leading manufacturing nation, it is unsurprising that many counterfeit and copycat products on market throughout the world originate from China. There is a common misconception amongst design owners in Europe that there is little which can be done to stem the manufacture and flow of infringing products from China. However, that is not the case. In this article, we will look at how design patent protection in China plays a significant role in protecting innovative industrial designs and how it can be used as a cost-effective tool for stopping the flow of infringing designs onto the global market.
Design patents are protected under the Patent Law of the People’s Republic of China. New designs, shapes, patterns, or combinations of colours, shapes and patterns which have an aesthetic appeal and are fit for industrial application may be patentable. Such protection is available to both two-dimensional and three-dimensional designs. However, in the case of two-dimensional designs, a design patent will not be granted for a design which is used primarily for the identification of pattern, colour or a combination of the two (e.g. a label).
The term of a design patent is 10 years from the date of application.
The application process for a design patent is relatively fast and cost effective. Together with the application, the applicant must submit drawings or pictures and a brief description of the design, setting out the essential features of the design. The drawings or pictures of the design should clearly show the top, bottom, front, back, left and right view and a perspective view of the design. The specification of the design and the drawings will be used to define the scope of the protection by the courts and administrative enforcement authorities.
Similar to Community designs in the EU, design patents in China are not subject to any substantive examination. The State Intellectual Property Office will only examine the application to ascertain whether the design is protectable, formalities have been complied with and that the application fee has been paid. The application process will take approximately six to twelve months.
China adheres to the “first-to-file” principle. It has, since the amendments to the Patent Law in 2008, adopted an absolute worldwide novelty standard, which means that a design will no longer be patentable in China if it has been previously published or used anywhere in the world.
The cost of filing for a design patent in China is approximately USD$ 2,000.
Once a design patent right is granted, no one else may manufacture, offer for sale, sell or import any products incorporating the patented design for production or business purposes, without the consent of the design owner. The design owner can seek an injunction, damages and other declaratory reliefs from the Court for infringement.
Safeguarding your innovative designs – get them patented and recorded with customs
It is important for rights owners to file for design protection in China as early as possible to prevent pirates from using the “first to file” principle to hijack designs. The invalidation of a design patent can be costly and can be best avoided by early filing in China (preferably during the early stage of the product development before the design is made public).
Another option for rights owners is to register the design patent with Chinese customs to stop the infringing designs leaving China to enter other markets. The Chinese Customs Law prohibits the export and import of goods to or from China that infringe intellectual property rights. Rights owners such as design patentees can register their design patents with the General Administration of Customs in Beijing. The recordal lasts for the term of the design patent and the recordal is placed on a central database accessible by all customs officials, making it easier for infringing products to be seized. The customs recordal process takes approximately 1 month and is another effective tool that rights owners should consider to tackle infringers.
Originally published in DesignWrites 2nd Edition. Co-authored by Fanny Siu.
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